American
intellectual property law has been an ill fit for protecting games. Game
mechanics are particularly susceptible to a confused and inconsistent
interpretation by the law.Game
mechanics, as used here, means the aspects of a game that affect the way it is
played such as the rules, the interaction of the players with the objects in
the game, and the interaction of the various objects in the game with each
other.The scope of this analysis
focuses on board and card games, but also addresses novel game mechanics
incorporated in video games.The
current state of intellectual property protection for games is an awkward
amalgamation of copyright and patent law.

The competing
doctrines of intellectual property law protect distinct aspects of games,
subject to significant overlap and confusion in the courts.Copyright protects the expressive elements
of games, but courts often struggle with the intersection between the
expressive and functional aspect of the game.Similarly, trademarks may protect the
aspects that identify the source or maker of the game, but not the parts that
are functional.Finally, Patents
allow for narrower protection of the novel aspects of games as a “process.”

Patent law is the
appropriate doctrine for protecting game mechanics and should be the exclusive
doctrine applied.Game mechanics
share the important features of scientific and mechanical inventions that
justify intellectual property protection that is broader in scope but narrower
in time and subject to protection only if they are novel and useful.[1]

Historical Protection of Games
with Copyrights

At
first impression copyright law seems to be the proper method of protecting the
creative act of designing a game.Game designers frequently assume that their board games are protected by
copyright.Numerous courts have
noted that toys are copyrightable.17 U.S.C 101; Lanard Toys Ltd. v.
Novelty, Inc., 375 F. App'x 705, 709-10 (9th Cir. 2010) (toy helicopters
and planes); Masquerade
Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 670-72 (3d Cir.1990) (“animal nose masks”).A quick Google search reveals a large number
of laymen and toy designers who have created a new board game seeking advice on
protecting their game with copyright.

The
appeal of copyright protection for games is evident. Copyright protection
attaches automatically and lasts a very long time.A starving game inventor or small
business has a strong preference for having automatic protection without going
through the lengthy and expensive process of acquiring a patent.Owners of older games that had patents
run out, or never had patents to begin with, would like to maintain their
monopoly for the more than 70 years, as provided by copyrights.

Nonetheless,
black letter copyright law does not protect the functional aspects of games. Atari, Inc. v. Amusement World, Inc., 547 F. Supp. 222, 227 (D. Md. 1981)
(copyright does not protect the idea of an asteroids game, just the “design
features” such as “the symbols that appear on the display screen, the
ways in which those symbols move around the screen, and the sounds emanating
from the game cabinet”).This goes back to the seminal United
States Supreme Court Case of Baker v.
Selden, in which Mr. Selden sought copyright protection for his books of
accounting forms.Baker v. Selden, 101 U.S. 99, 100 (1879).His book contained forms to be used to
undertake his particular method of accounting.Baker,
101 U.S. 99, 100 (1879).After Mr.
Selden’s death, Mr. Baker produced and sold an accounting book with forms that
were not identical but enabled the same system of accounting.Mr. Selden’s widow sued on the grounds
that Mr. Baker’s books infringed the copyright she had been assigned.

The
Supreme Court relied on, and elucidated, the idea-expression dichotomy of
copyright in denying Mrs. Selden’s claim.The idea-expression dichotomy is the doctrine that the expression of an
idea may be copyrighted but the idea behind that expression cannot.For example a book describing a method
of drawing, regardless of how many illustrations it contains demonstrating the
process, cannot preclude another author from writing a book on the same
method.Id. at 103.Baker is relevant to game mechanics
because the functional aspects of a game are ideas, as compared to the
implementation of that idea which is expression.This distinction is not always clear or
easily made.

Recently,
a court in New Jersey illustrated how easy it is to confuse functional and
expressive aspects of game mechanics.In Tetris Holding, LLC v. Xio
Interactive, Inc., the court, after stating the correct rule, that “game
mechanics and the rules are not entitled to protection,” proceeded to find that
copyrights protected a number of functional aspects of the classic videogame
Tetris.Tetris Holding, LLC v. Xio Interactive, Inc., 863 F. Supp. 2d 394,
404 (D.N.J. 2012).

The defendant in Tetris Holding, intentionally and admittedly copied the game Tetris
to port it over to a phone or device application.The defendant’s game was called Mino
closely resembled Tetris, one of the most popular videogames ever created.The gameplay was identical but the
coloring and texture of the pieces was different slightly.The holders of Tetris’ copyright,
appropriately named Tetris Holding, LLC, sued.The game mechanics of Tetris were never
patented so the owners relied on their assigned copyrights and trademarks to
protect their investment.

While Mino undoubtedly did violate
copyright, the court in Tetris Holding
made the mistake of combining several functional game mechanics into the
protected category of expressive components.Notably, the court opines that Mino
could have been created with different pieces that the seven used in the
original Tetris game, the movement of the pieces could be different and the
game would still be a puzzle game. Tetris Holding, 863 F. Supp. 2d
at 411.Further, the court explains
that the “the display of “garbage” lines, the appearance of “ghost” or shadow
pieces, [and] the display of the next piece to fall,” are all
copyrightable.Id. at 413.

The features identified by the court
are not merely stylistic choices, but functional aspects of the game.While a similar puzzle game can be
created using blocks of different shapes and sizes, the seven selected by
Tetris represent the only seven configurations of four even squares.As such, they interact geometrically in
a unique way.The shape of the
pieces requires the player to make predictable strategic choices. Certainly
another puzzle game with different shaped pieces could illicit a different set
of strategic choices, but that would be a different game and likely a less
optimum one.If Mino had added just
one additional square to the pieces there would be 26 different shapes rather
than seven.This adds significant
complexity and greatly increases the difficulty of the game.While a game of “Pentris” could be
interesting and fun in its own right, it would no longer be the same game with
the challenges and satisfaction of Tetris.[2]

Similarly, the court claimed that the
movement of pieces on the field could be different.There are three possible alternatives
for how pieces can move in a Tetris game without changing the strategy of the
game.The pieces could move from
one side of the screen to the other, from the bottom of the screen to the top,
or in the third dimension appearing to come toward or away from the player.[3]Unlike the unlimited options that the Tetris Holding court claims any other
change affects the strategy, rather than the style, of the game.Tetris
Holding, 863 F. Supp. 2d at 411.For example, if the pieces flipped
across an axis, rather than rotating, the play of the game would be
fundamentally changed. In this
game, unlike in Tetris, the “Z” and “S” shaped blocks would be preferable to a
horizontal line.

Each of the other features the court
claims are protected by copyright are also functional and change the strategy
and difficulty of the game.The appearance
of “garbage lines,” lines that appear at the bottom of the screen with one or
more empty spaces are necessary to create additional blocks that can eventually
be removed with clever play.The
“ghost” pieces that show where the block will fall once released, or
accelerated, provide a crutch for unskilled or unpracticed players.The box displaying the next piece to
fall gives the game the additional strategy of limited advanced planning,
another functional aspect.

In theory, copyright only protects the
exact expression of the game or the rules of the game, but in practice that
protection bleeds over into the ideas themselves.

Historical Protection of Games with Patents

Games
can be, and frequently are, patentable.The most successful patented board game is Monopoly, U.S. Patent No.
2,026,082 (Filed in 1935).The
patent covers the board as well as the rules for playing the game. Games fit
under the category of “processes” in Section 101 of the patent act.35 U.S.C. § 101; Shubha Ghosh, Patenting Games: Baker v. Selden Revisited,
11 Vand. J. Ent. & Tech. L. 871, 875 (2009).

To
qualify for a patent the game must be associated with some apparatus for
playing the game, such as a board and pieces.See,
In re Bilski, 545 F.3d 943, 951-52
(Fed. Cir. 2008).A “process” must
not claim “laws of nature phenomena, or abstract ideas.”Id.
at 951.While board games can be
eligible for patents, they are often strictly limited or found invalid because
of a broad understanding of what constitutes a novel game mechanic.

The
Federal Circuit had the opportunity to address whether the different printed
words and labels associated with a game was a sufficient change to make a board
game patentable.In In re Bryan, the court of appeals was
confronted with a musical band themed board game.In
re Bryan, 323 F. App'x 898, 900 (Fed. Cir. 2009).The claims included the board with
irregular segmented paths to a central area, tokens to denote players, die to
determine the increments moved money, an objective and cards.Id.At issue were the cards.The claimed invention had cards denoted
as difference occurrences in the game, such as “Consequence” cards and “Band
Member” cards.Id.

The
problem with the claimed invention was that the only significant difference
between the claimed game and prior art musical band themed games was the
content of the printed matter on the cards used.The court held that the language and
substance of printed matter “cannot impart patentability, as it is useful and
intelligible only to the human mind.”The new game could not be claimed because the method of playing it was
the only difference in a method of using the game rather than one of the
functional parts of the board.Id. at 902

This
illustrates a problem with the current state of patent protection for games:
courts are often unwilling to see the method of playing a game unless it
relates to a functional aspect of the apparatus on which it is being
played.A new and innovative way of
playing a game may be precluded from patent protection because the physical
aspects of how the pieces interact are viewed by the examiner or the court as
obvious, notwithstanding the significant advances in gameplay and
strategy.At its core, the game of
Magic: The Gathering involves taking cards from a deck of cards and putting
them in your hand and later placing them on the board according to the printed
instructions on the card.A court
that abstracts the playing of a game to this physical level would find the game
of Uno to render Magic obvious in light of prior art and therefore defeat a
significant incentive for anyone to create a new innovative way of playing with
previously existing game actions.

Patents
have traditionally been a rough fit for protecting games and game
mechanics.Courts are uncomfortable
with the abstract, and facially frivolous, nature of methods of playing a
game.This paper will show that
patents are the proper device for protecting the intellectual property of game
mechanics and should be expanded or adapted to better embrace those ideas.

The “Right Fit” for Protecting Games

To
determine the proper protection for games it is pivotal to determine what
features of an invention or creation make it better suited for copyright or
patents and then comparing those to the features of game mechanics.Copyrights and patents each serve
different functions, have different costs for society, and produce different
benefits for their holders.

Copyright

Works
that warrant copyright protection are distinguishable in that strong protection
of that work only removes a small portion of the total creatable works, or the
creative commons. An author who writes a book or a painter who paints a picture
can be given protection only in that exact configuration of words or colors and
would value that protection.This
is distinct from patent law because protection in an exact invention would not
be useful if it did not prevent people from creating distinct, but functionally
identical devices, which would work around the patent while still riding on the
effort of the original inventor.Further, the chances that anyone would independently write a book with
that configuration of words or an identical painting is so miniscule that it
approaches zero. These two factors make it practical to provide a narrow
protection, just the story or art created and not similar or independently
created stories, which does not impose a large cost on society; no one would
have created that work of art, so no one is prevented from creating that work
of art.

The
reason creative works can be protected this way is because there is an
unlimited number of stories that could potentially be told, to use books as an
example.There is no right way to
write a story about a child with a tragic past who attends a magical
academy.J.K. Rowling certainly
wrote a popular version but Patrick Rothfuss’ novel “The Name of the Wind” fits
the same outline but is drastically distinct.This is distinct from inventions as
there are only a set number of ways to solve a problem, presumably only one of
which is optimal.If there are only
a limited number of ways to solve a problem, it is a much bigger cost on
society to grant long protections on the best, or maybe only, way to solve that
problem.Copyrights are given
easily and last a long time because they have a low cost.

Game
mechanics are a way of solving problems, not a purely creative endeavor.The problem to be solved is: how to make
a game that is a degree of difficulty, winnable, and enjoyable.Depending on the market the degree of
difficulty sought will be different; the maker of a child’s game will want to
produce a game that can be grasped by developing minds while Richard Garfield[4]
will tend to make a game directed at a more advanced audience.What the degree of difficulty sought is
not important. There are a limited number of ways to solve this problem.Almost every board game that requires a
representation of progression uses a segmented path: e.g. Life, Monopoly, Candyland, and even Snakes and Ladders.There are only so many ways to depict linear progression toward an end
goal on a two dimensional board.Granting the long protection of copyrights would interfere with the
ability of future inventors in a way that is unlike granting the same
protection in a novel or work of art.

Patents

Unlike
copyrights, patents take into account the limited pool of possible
solutions.In response American
patent law restricts patents in time, patents last a fraction of the time that
copyrights last, and in how easily they are granted.Patent law recognizes the need to
provide inventors value for their invention by granting them limited
monopolies.Those monopolies cause
a social harm, but that harm is less than if the invention had never existed
and it acts as a price paid to the inventor for creating and then disclosing
his invention.Further to obtain a
patent an inventor must show that what he created was novel and useful.

Patent
protection is broader than that copyright protection because it must be to
provide the appropriate benefit to the inventor.The value of an invention that solves a
problem is not in the implementation but in the result.Once the process of solving a problem is
known then any number of creative ways of solving the problem with different
styles, effects, or devices.These
devices, or work arounds, would not be covered by a narrow protection of the
invention.Instead the patent
covers all the different implementations of a particular process.

Patents
provide the proper protection for game mechanics.Game mechanics are ways to solve
problems that have only limited solutions.Once a game mechanic is invented and divulged then other implementations
of that function can be used to free ride on the inventor’s work.For an example, once the inventor of Candyland solved the problem of how to
give players the impression of progression across a two dimensional board with
its segmented path, a copyright would only protect that specific curvy pastel
colored path, but the inventor of Snakes
and Ladders, who was looking for a way to show progression could take the
path, change the implementation to fill up the whole board, and avoid the
narrow copyright protection.Patents account for and address this possibility.

Added Benefits of Patent Protection

Patent
protection also has the benefit of optimizing development of patented
processes.As Edmund Kitch argues
in his article “The Nature and Function of the Patent System,”[5]
patents actually encourage efficient use of intellectual property.The patent holder has the right to
license his patent for use and for development.He has an incentive to optimize the use
of his patent because every additional use is more money in his pocket through
royalties.

The
patent holder is in a position to direct further research on technologies
covered by his patent.If it would
be inefficient for three groups to be doing the same research, the patent
holder only licenses it for research to one group. This prevents duplicative
and wasteful uses of the intellectual property.

Game
mechanics could similarly benefit from this direction.Once a mechanic is covered by patent law
there would be an area of intellectual property that would be under the control
or direction of an interested party who could insure that further research in
that area is optimized.

Conclusion

Game
mechanics are ideas that solve problems and as such are better accommodated by
patent rather than copyright law.Patent law has the appropriate rewards, taking into account the social
cost of granting a monopoly on a limited number of possible solutions.As an additional benefit patent will
create an additional benefit for development of uses for game mechanics by
putting an interested party in charge of how possible uses are pursued.Patent law should embrace the abstract
mechanics that create novel ways of enjoying games, whether embodied in cards,
boards, or computers.

[1] This analysis assumes that
intellectual property provides sufficient incentives for game designers and
inventors to create more game mechanics in the presence of protections than
would be created in the absence of intellectual property protection.

[2] There is in fact a flash
game called “Pentris” which is a version of Tetris played with all the pieces
that can be created by adjoining the sides of 5, 4, 3, and 2 evenly sized
blocks.The most notable difference
is that having a piece with nowhere to place it without creating empty space
underneath blocks.The strategy
feels more like damage control, fighting a losing battle to survive rather than
efficiently clearing rows and acquiring points.

[3] It is conceivable that a
variation of Tetris could be created that was rotated at an angle other than 90
degrees on the screen.This awkward
configuration is not significantly different than the possibilities listed
above.

[4] Richard Garfield created
Magic: The Gathering and a number of other complicated and successful
collectable card games.